Appeal Court. 30 Nov.,
1935.Appeal from Judgment of
Supreme Court
Decisions of Pull Court,
Nigeria, not binding on
Divisional Court, Gold Coast or
West African Court of
Appeal-Opinions of deponents as
to resemblance of Trade Marks
not receivable in
evidence-Absence of evidence
that any0ne was confused or
deceived by resemblance-Decision
of Full Court of Nigeria on .
similar issues discussed and
distinguished.
Held: Evidence insufficient to
shift onus from appellant, and
appeal dismissed.
The facts are sufficiently set
out in the judgment.
Akiwumi
for Appellants.
J. H. Coussey
(with him Hamrnond-Laing)
for Respondents.
The following judgment. was
delivered:-
DOORLY, J.
This is an appeal by the
Netherlands Distillery from a
judgment of Aitken, J., in the
Divisional Court at Accra
whereby he refused to make any
order of rectification of the
Trade Marks Register by the
removal from the Trade Marks
Register or other alteration to
the Trade Marks Nos. 2534, 2537
and 2538, registered in the name
of .J. H. Henkes' Distillery,
the respondents in this appeal,
on the 31st .July, 1930, the 1st
August, 1930, and the 1st
August, 1930 respectively, on
the ground that none of these
marks so closely resembled the
Trade Mark No. 168 of the
appellants as to be calculated
to deceive.
he appeal has been complicated
by the fact that the matters in
issue in this appeal are
identical with those decided in
favour of the appellants by a
Full Court of the Supreme Court
of Nigeria on the 3rd November,
1933, and by the fact that the
learned Judge from whose
decision the present appeal is
taken decided those matters in
the sense opposite to the
decision of the Nigerian Full
Court.
, Mr. Akiwumi for the
appellants argued that Aitken,
J. was bound by the decision of
the Nigerian Full Court and
cited a dictum of Sawrey-Cookson,
J. in another case in the Full
Court of Nigeria to the effect
that a Judge sitting in a
Divisional Court in the Gold
Coast might regard himself as
bound by a decision of the
Nigerian Full Court because the
Judges of Nigeria are also
ex-officio
Judges of the Supreme Court of
the Gold Coast.
I cannot accept this contention.
'],he :Full Court of Nigeria was
a Nigerian Court and every .T
ltdge sitting ill that Court,
whether he was substantively a
Nigerian Judge or not, was for
the purpose of the matter in
hand a Nigerian Judge. The Full
Court of Nigeria had no
appellate or other powers in
regard to any Court in the Gold
Coast. It therefore follows that
Aitken, J. was not bound by a
decision of the Full Court of
Nigeria, although it was his
duty (and he fulfilled that
duty) to consider very
carefully any decision of the
Full Court of Nigeria. The West
African Court of Appeal is
clearly not bound by decisions
of the Full Court of Nigeria.
In the proceedings before Aitken,
J. the
onus
of proof was admitted to be on
the present appellants for the
reason that Henkes had already
registered these three Trade
Marks and the motions were for
removal or rectification.
It was necessary, therefore, if
they were to succeed, for the
Netherland Distillery to show
that Henkes' Trade Marks so
closely resembled their Trade
Mark No.
168 as to be calculated to
deceive.
The evidence which they have
adduced consists of:-
(I) an affidavit of Mr. Akiwumi,
counsel for the appel1ants, to
the effect that the Trade Mark
objected to have such
resemblance to the Movers Mark
No.
168 as to be calculated to
deceive. (Pages 2-5 of the
Proceedings).
(2) an affidavit of Mr. Menseh.
who expresses the same opinion
as Mr. Akiwumi.
(3) the Trade Marks themselves
As to these affidavits
expressing the personal opinions
of the deponents, those opinions
are not receivable in a Court as
evidence for in
Payton
4-
Co. Ltd. v. Snelling, La7ll[Jard
9-
Co. Ltd. (17
R.P .C. 48 C.A.) Lord Macnaghton
laid down that that was not a
matter for the witness, but a
mattpr for the Judge.
The only other point made by the
appellants in their affidavits
seems to be that coins 1.,1'
medals, especially gold--,or
silvercoloured coins or medals,
together with the use of red as
a colour on the labels of gin
bottles is the sole privilege of
the appellants.
As to this the affidavits on
behalf of the respondents and
the evidence of the Trade Marks
Registers seem to be a complete
traverse. As early as
1904 J. H. Henkes registered a
Trade Mark in this Colony (No.
55) which consisted of a label
with a crown at the top, below
which were two groups of medals,
one consisting of two medals' in
obverse and reverse each
slightly superimposed on the
next and below that one medal in
reverse and obverse, similarly
superimposed. Henkes' affidavit
(page 32 of the Proceedings)
deposes that this Trade Mark was
registered in Great Britain in
1876, in Holland in 1881, and
was in use in the Gold Coast
before 1882.
In
1913 the appellants registered
their Trade Mark No. 168: the
principal features of which are
a cluster of medals, some
thirteen in number superimposed
on each other in the form of the
letter" U " with the lower part
of the curve very thick On this
lower part appear the letters"
E.K." These medals are in gold
in the register and the letters
are in red, but both the gold
and the red colours are admitted
as added matter and there is a
disclaimer of any right to the
exclusive use of the added
matter.
In
1923 the respondents registered
a new Trade Mark which appears
on page 173 of Volume 10 of the
Trade Marks register, but also
seems to have the number 1477.
The significant part of this
label is a crown below which are
three medals in obverse and
reverse in a circle and the
middle a stork with the
signature " J. H. Henkes"
running across the figure of the
bird.
In
1930 the respondents registered
the three Trade Marks, which are
the subject of this appea1.
No. 2534 has a crown at the top,
almost, if not, identical with
the crown in Nos. 55 and
1477, below which is a medal in
obverse and reverse (London
1862); below that two smaller
medals in obverse and reverse
(Paris 1867 and Amsterdam 1866);
below a gold band with "Gold
Band Geneva " in red letters,
then the name of the firm; and
below again three medals in
obverse and reverse in the form
of a small "U" with very short
sides and a broad bottom, quite
dissimilar to the "U" of medals
in the appellants' Trade Mark
No. 168.
No. 2537 is headed by a crown
identical with that in No. 2534,
it has a vertical ribbon of red
running down the label and the
words" Red Ribbon Geneva"
running across the label; below
two medals in obverse and
reverse almost in a straight
line (London
1862, Paris 1867); below one
medal in obverse and reverse
(Amsterdam 1866) and below that
two medals in obverse and
reverse (Philadelphia 1876 and
Paris 1878), then the name and
address of the firm.
No. 2538 has the same crown as
the others, the words I' Red
Ribbon" written thrice
vertically in red letters down
the middle of the
Bottle,.
below the crown the words" Red
Ribbon Geneva", below the two
medals almost in a straight line
(London
1862, Paris 1867); below that
one medal in obverse and reverse
in a straight line (Amsterdam
1866); and below two medals in
obverse and reverse almost in a
straight line (Philadelphia 1876
and Paris 1878) .
It therefore appears that since
1904 J. H. Henkes have had Trade
Marks in the Gold Coast which
have consistently contained a
crown at the top and medals
thereunder.
This disposes of the appellants'
contention that the use of prize
medals is his sole privilege-.
Further the appellant has
demonstrably no exclusive right
to the use of any particular
colour.
In view of the fact that the
respondents had continuously
used prize medals in their Trade
Mark since 1904, I cannot agree
that the omission from the Trade
Marks now under discussion of
the distinctive mark of the
stork which still appears only
in their 1923 Trade Mark was
such as to make the three Trade
Marks objected to so resemble
that of the appellant as to be
calculated to deceive.
Having considered the history of
the respondents' Trade Marks, I
cannot agree that the alteration
in Trade Marks was made for the
purpose of confusing the minds
of illiterate buyers into the
belief that the respondents' gin
was in fact that of the
appellants.
A further strong point in favour
of the respondent is the fact
that the appellants started
these proceedings in October,
1931, his last papers were filed
on the 16th March, 1935, and
judgment was delivered on the
23rd March, 1935.
The Trade Marks objected to had
therefore been in use for nearly
five years before judgment in
this ease was delivered. The
appellants had all that time to
collect evidence of persons who
had been deceived or confused by
these Trade Marks and yet no
such evidence is forthcoming.
One instance of such deceit or
confusion would be a much
stronger piece of evidence than
any number of opinions that
deceit or confusion was likely
to arise.
In the result I find that the
appellant has not produced such
evidence a~ to shift the
onus
from himself of proving that any
of the three labels of the
respondent was or is calculated
to deceive and in my opinion
this appeal should be dismissed
with costs.
There are several points of
distinction between the case as
presented to Aitken, J. and to
this Court and the case which
was presented to the Full Court
of Nigeria and I think it
advisable to draw attention to
some of th3se matters. Before
the Full Court the
01/.1l8
was on Henkes to show that his
proposed Trade Mark was not
calculated to deceive. In that
case he was an applicant, in our
case he was the proprietor of
the Trade Marks.
Again, the Full Bench, rightly
or wrongly, heard evidence of
persons connected with the trade
who expressed their opinions as
to whether illiterate natives of
Nigeria were likely to be
deceived and in the judgment
considerable stress was laid on
this evidence. Here we had no
evidence of persons connected
with the trade.
